Mastronardi et al.v.Kotowski et al.

Patent Trials and Appeals Board

Jun 17, 2013

12344162 - (J) (P.T.A.B. Jun. 17, 2013)

BoxInterferences@uspto.gov Paper 37
Tel: 571-272-4683 Entered: June 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

ANDREAS KOTOWSKI and RONALD J. HUGHES,
Junior Party
(Patent No. 7,826,589),

v.

RICHARD MASTRONARDI, DEAN FLEURY,
JEFFREY R. SCHUBERT, JOSEPH DIMARE,
RICHARD SCHUELLER and ALEXANDER CHALMERS,
Senior Party
(Application No. 13/047,878).
_______________

Patent Interference No. 105,890 (RES)
(Technology Center 2800)
_______________

Judgment - Request for Adverse - 37 CFR § 41.127(b)
By an e-mail sent on June 12, 2013, Mastonardi requested a conference call 1
related to the settlement of this interference. The e-mail indicated that Kotowski 2
would request adverse judgment. The call was held that day beginning at 3
4:00 p.m. Attending the call were Samuel J. Petuchowski, Esq. for Mastronardi, 4
Charles L. Gholz, Esq. and Alexander B. Englehart, Esq. for Kotowski, and 5
Richard E. Schafer, APJ. The purpose of the call was to discuss further 6
proceedings in this interference in light of a settlement agreement and the request 7
for adverse judgment. 8
2

While the request for and entry of adverse judgment is typically straight 1
forward, this interference has a twist. Each party has pending motions for which 2
briefing has not been completed. Motions and oppositions have been filed and 3
desired cross-examination was said to have been completed. Replies have not been 4
filed. 5
There are three pending motions. Kontowski Motion 1 asserts that the 6
subject matter of Mastonardi’s involved claims are unpatentable under 35 U.S.C. 7
§ 135(b)(1) and (2). Kontonski Motion 2 attacks the accorded benefit of 8
Mastonardi’s provisional Application 60/988,933 for the subject matter of the 9
count. Mastonardi Responsive Motion 1 is a motion reacting to Kotowski’s § 10
135(b)-motion. Mastronardi seeks to add Claim 19 to its application. According 11
to Mastronardi, the subject matter of Claim 19 would not be subject to the one-year 12
bar of § 135(b). 13
During the conference, the parties expressed different views on how to 14
handle the matters raised by the motions. Mastonardi suggested that adverse 15
judgment be entered against Kontowski and that the Board instruct the Examiner to 16
consider the issues raised in the motions. Kontowski suggested that the Board 17
retain jurisdiction to decide the motions including any reply by Mastronardi related 18
to its responsive motion. The parties described their respective positions in a series 19
of e-mails to the Board. The e-mails are attached as Ex. 3001. Subsequently, on 20
June 13, 2013, in an email from Kotowski’s counsel, Kotowski joined with 21
Mastonardi’s request that judgment be entered against Kotowski, and that the 22
Examiner be instructed to consider all issues raised in the pending motions and any 23
Mastronardi remarks to be filed addressing Kotowski’s oppositions to the motion 24
to add Claim 19. A copy of the email is attached as Exhibit 3002. 25
In light of the parties’ joint request, the request for entry of adverse 26
judgment is granted. 27
3

The parties’ request to instruct the Examiner to consider the issues raised by 1
the remaining motions cannot be granted. We are not aware of the authority which 2
permits us to instruct the Examiner to take the specific actions the parties request. 3
While we have authority to make recommendations, only recommendations to 4
make a rejection are binding on the Examiner. 37 CFR § 41.127(c)). Because the 5
briefing is not complete and the Board has not considered the merits of the 6
motions, we are not in a position to recommend that any rejections should be 7
made. However, we recommend that the Examiner consider the issues raised by 8
the motions to the extent the Examiner deems appropriate. 9
10
ORDER 11
It is 12
ORDERED that judgment on priority as to the subject matter of Count 1 13
(Paper 1, p. 4) is awarded against Patent 7,826,589; 14
FURTHER ORDERED that claims 1-18 of Patent 7,826,589, 15
corresponding to Count 1, are cancelled (35 U.S.C. § 135(a)); 16
FURTHER ORDERED that a copy of this judgment be made of record in 17
the files of Patent 7,826,589 and Application 13/047,878; 18
FURTHER ORDERED that if there is any settlement agreement or related 19
documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) 20
and 37 CFR § 41.205, and 21
4

RECOMMENDED that the matters raised by the parties’ motions be 1
given due consideration as part of any remaining ex parte examination of 2
Application 13/047,878. 3

/Richard E. Schafer/ )
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
/Sally G. Lane/ ) PATENT TRIAL AND
SALLY G. LANE ) APPEAL BOARD
Administrative Patent Judge )
)
/Hung H. Bui/ )
HUNG H. BUI )
Administrative Patent Judge )

cc (via e-mail):

Attorney for Kotowski:

Charles L. Gholz, Esq.
W. Todd Baker, Esq.
Lisa M. Mandrusiak, Esq.
Oblon Spivak McCelland
Maier & Neustadt, LLP
cgholz@oblon.com
interferencedocket@oblon.com

Attorney for Mastronardi:
Samuel J. Petuchowski, Esq.
Timoty M. Murphy, Esq.
Sunstein Kann Murphy & Timbers, LLP
spectuchowski@sunsteinlaw.com
tmurphy@sunsteinlaw.com

1
Schafer, Richard
From: Banks, Lawrence J.
Sent: Wednesday, June 12, 2013 12:58 PM
To: Schafer, Richard
Subject: FW: Kotowski v. Mastronardi; Int. No. 105,890; Judge Schafer 1945/521} [IWOV-
IMANAGEDB.FID3600706]
FYI 

From: Sam Petuchowski [mailto:SPetuchowski@sunsteinlaw.com]
Sent: Wednesday, June 12, 2013 12:49 PM
To: Interference Trial Section; Banks, Lawrence J.
Cc: Tim Murphy; Todd Baker; Alexander B. Englehart; Lisa M. Mandrusiak; {F3600706}.iManageDB@dms.oblon.com;
'Chico Gholz'
Subject: RE: Kotowski v. Mastronardi; Int. No. 105,890; Judge Schafer 1945/521} [IWOV-IMANAGEDB.FID3600706]

For sake of completeness, Judge Schafer should also be informed that Sec. 2.2 of the Settlement Agreement
provides expressly that “Rapiscan agrees to join AS&E in requesting that the APJ instruct that the Examiner, in
subsequent ex parte prosecution of the AS&E Application, consider all issues raised in the motions and
oppositions … .”

Samuel J. Petuchowski, Ph.D., Partner
Sunstein Kann Murphy & Timbers LLP
125 Summer Street | Boston, MA 02110-1618
617.443.9292 main | 617.443.0004 fax
spetuchowski@sunsteinlaw.com | www.sunsteinlaw.com
Winning Intellectual Property®
This e-mail is from Sunstein Kann Murphy & Timbers LLP, a law firm, and may contain information that is confidential or privileged. If you are not the intended
recipient, do not read, copy or distribute the e-mail or any attachments. Instead, please notify the sender and delete the e-mail and any attachments. Thank you.

From: Chico Gholz [mailto:CGholz@oblon.com]
Sent: Wednesday, June 12, 2013 12:03 PM
To: Maria Vignone
Cc: Sam Petuchowski; Tim Murphy; Todd Baker; Alexander B. Englehart; Lisa M. Mandrusiak;
{F3600706}.iManageDB@dms.oblon.com
Subject: FW: Kotowski v. Mastronardi; Int. No. 105,890; Judge Schafer 1945/521} [IWOV-IMANAGEDB.FID3600706]

In fairness to Judge Schafer, I think that he should be informed that there is an additional issue to be decided during
or after the conference call requested by Dr. Petuchowski.

(1) Kotowski's pending Motion 1 seeks a judgment that all of Mastronardi's claims designated as
corresponding to the count are unpatentable under 35 USC 135(b)(1). Mastronardi's Opposition 1 argues that
those claims are not unpatentable under 35 USC 135(b)(1).

(2) Kotowski's pending Motion 2 seeks a judgment that Mastronardi is not entitled to the benefit of the filing
date of its provisional application. Mastronardi's Opposition 2 argues that Mastronardi is entitled to the benefit of
the filing date of its provisional application.

Kotowski v. Matronardi
Interference 105,890
Ex. 3001
2
(3) Mastronardi's pending Motion 1 seeks to add a new claim 19, which it argues is not
unpatentable. Kotowski's Opposition 1 argues that Mastronardi's proposed claim 19 is unpatentable (a) on the
ground of judicial estoppel, (b) under the written description requirement of the first paragraph of 35 USC 112,
and (c) under the enablement requirement of the first paragraph of 35 USC 112.

(4) Neither party has filed a reply to the foregoing oppositions.

(5) However, in the 35 USC 135(c) agreement which Mastronardi filed earlier today, the parties have agreed
that "the Parties are confident that the issues raised in their respective pending motions will be dealt with during
post-interference ex parte prosecution...."

(6) The additional issue which will be presented to Judge Schafer during the conference call is whether those
issues should be dealt with by a line examiner or whether those issues should be dealt with by a panel of the
board pursuant to the board's authority to do so recognized by the Federal Circuit in In re Gartside, 203 F.3d
1305, 53 USPQ2d 1769 (Fed. Cir. 2000).

CHICO

From: Sam Petuchowski [mailto:SPetuchowski@sunsteinlaw.com]
Sent: Wednesday, June 12, 2013 7:35 AM
To: 'Maria Vignone '
Cc: Chico Gholz; Todd Baker; Alexander B. Englehart; Lisa M. Mandrusiak;
'{F3600706}.iManageDB@dms.oblon.com'; Tim Murphy
Subject: Kotowski v. Mastronardi; Int. No. 105,890; Judge Schafer 1945/521}
Dear Ms. Vignone:

This is to request a conference with Judge Schafer this afternoon.

The topic will be settlement of the captioned interference. Counsel to Kotowski will request entry of
adverse judgment.

Yours truly,

Sam Petuchowski

Samuel J. Petuchowski, Ph.D., Partner
Sunstein Kann Murphy & Timbers LLP
125 Summer Street | Boston, MA 02110-1618
617.443.9292 main | 617.692.2237 direct
spetuchowski@sunsteinlaw.com | www.sunsteinlaw.com
Winning Intellectual Property®
This e-mail is from Sunstein Kann Murphy & Timbers LLP, a law firm, and may contain information that is confidential or privileged. If you are not the
intended recipient, do not read, copy or distribute the e-mail or any attachments. Instead, please notify the sender and delete the e-mail and any
attachments. Thank you.

Kotowski v. Matronardi
Interference 105,890
Ex. 3001
1
Schafer, Richard
From: Chico Gholz
Sent: Thursday, June 13, 2013 3:22 PM
To: Schafer, Richard
Cc: Interference Trial Section; Sam Petuchowski; Tim Murphy; Todd Baker; Alexander B.
Englehart; Lisa M. Mandrusiak; {F3600706}.iManageDB@dms.oblon.com
Subject: Kotowski v. Mastronardi [1945/521] [IWOV-IMANAGEDB.FID3600706]

Dear Judge Schafer:

Further to our conference of yesterday afternoon in the matter of Interference No. 105,890, the
undersigned counsel for Kotowski agrees to join counsel for Mastronardi in requesting Judge Schafer
to instruct that the Examiner, in subsequent ex parte prosecution of the Mastronardi Application,
consider all issues raised in the motions and oppositions, along with any remarks to be set forth by
Mastronardi regarding said issues, and, in particular, consider new Claim 19 set forth in Mastronardi’s
second-round substantive motion, as well as any additional new claims that may be presented by
Mastronardi.

Accordingly, the parties request that you rule on the outstanding request for adverse judgment, and
that the Board not retain jurisdiction, in the interest of judicial economy, since no ruling has been
made on any of the motions.

CHICO

Kotowski v. Mastronardi
Interference 105890
Ex. 3002